DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 2, and 6–13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1–4 and 6–10 of copending Application No. 18/415,553 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other. In particular, Claim 1 of the reference ‘553 application recites a virtual image display device including (1) a scattering member; (2) a projection optical system; (3) a light-blocking member; (4) a first polarizing member; (5) a second polarizing member; and (6) a polarization separation lens element; while the pending Claim 1 recites a head-mounted display apparatus including (1) a scattering member; (2a) a first projection optical system; (2b) a second projection optical system; (3) a light-blocking member; (4) a first polarizing member; (5) a second polarizing member; and (6) a polarization separation lens element. That is, the difference between the pending and the reference claims is that the pending claims include two projection optical systems, generally one for each eye of a head-mounted display; however, such a duplication of parts for a known type of display that requires two display systems would have been obvious to one of ordinary skill in the art at the time of effective filing. See the below claim correspondence table.
Pending Claims
Claims of Reference Application ‘533
1
1
6
3
7
4
8
6
9
7
10
8
11
9
12
10
13
1
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 6 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding Claim 6, the limitation “the first polarizing regions” is unclear. In particular, Claim 1 introduces “a first polarizing region” in the singular, while Claim 6 references plural first polarizing regions. For purposes of examination, the claimed plural first polarizing regions of Claim 6 will be considered “wherein the first polarizing region comprises two polarizing regions that are . . .”
Appropriate clarification and correction are required.
Allowable Subject Matter
Claims 1–13 are allowed (subject to the §112 rejection above).
The following is an examiner’s statement of reasons for allowance:
Regarding Claim 1:
U.S. Patent No. 9,835,865 to Inagaki discloses (e.g., Figs. 1 and 4 and their description):
A head-mounted display apparatus (col. 1, lines 14–19) comprising:
a scattering member 13 including a first scattering region configured to scatter image light for a right eye and a second scattering region configured to scatter the image light for a left eye (e.g., col. 9, lines 32–37 teaches that a second display may be provided for a second eye, where the second display would include the same features as the first display);
a first projection optical system 2 configured to irradiate the first scattering region with the image light (Fig. 1);
a second projection optical system 2 configured to irradiate the second scattering region with the image light (e.g., col. 9, lines 32–37 teaches that a second display may be provided for a second eye, where the second display would include the same features as the first display, including a second projection optical system 2);
a first polarizing member 3 arranged at a face side of the scattering member and including a first polarizing region provided corresponding to the first scattering region and the second scattering region, the first polarizing region being configured to restrict the image light scattered by the scattering member to a first polarization direction (col. 5, lines 1–3); and
a second polarizing member 4 arranged at an external side of a position of the first polarizing member (Fig. 1) and including a second polarizing region configured to restrict the external light to a second polarization direction different from the first polarization direction (col. 5, lines 4–28).
U.S. Patent Application Publication No. 2002/0005921 to Sasakura et al. teaches (e.g., paragraph [0116]):
a light-blocking member arranged at an external side of the scattering member and configured to suppress incidence of external light on the first scattering region and the second scattering region (paragraph [0116] teaches, in a display useful for an HMD, paragraph [0003], including a light-shielding plate in a peripheral region of the desired display area to reduce influence of stray light).
However, the prior art of record fails to disclose, and would not have rendered obvious, the combination of all features recited in Claim 1, all taken together in combination as a whole, including but not limited to “a polarization separation lens element arranged at a face side of the first polarizing member and having refractive power configured to selectively act on polarized light of the image light.” Claims 2–12 depend from Claim 1; Claim 13 recites similar features as Claim 1 and is allowable for similar reasons.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN CROCKETT whose telephone number is (571)270-3183. The examiner can normally be reached M-F 8am to 5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Caley can be reached at 571-272-2286. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RYAN CROCKETT/Primary Examiner, Art Unit 2871